Insights: Adidas Put Their Best Foot Forward

Adidas has prevailed in a long running series of disputes regarding their three stripe position mark.

In two General Court decisions Adidas has succeeded against Shoe Branding Europe BVBA in long running oppositions against a position mark application for a two stripe mark applied to shoes.

Adidas are the proprietors of a three stripe position mark applied to shoes. This, it is fair to say, is a well-known mark enjoying a reputation. This was something Adidas were able to prove.

In the first application Shoe Branding Europe applied for a position mark on shoes consisting of two stripes and covering footwear. Adidas opposed. Although initially unsuccessful, they had subsequently successful before the General Court. This was then upheld by the CJEU and remitted back to the Board of Appeal who then found in favour of Adidas. This decision was appealed to the General Court which has now issued a decision.

In the meantime, Shoe Branding Europe filed a second application for an identical mark covering “safety footwear for the protection against accidents or injury”. Unsurprisingly this was also opposed by Adidas who were unsuccessful at first instance. On appeal to the Board of Appeal Adidas succeeded and this was appealed to the General Court who upheld the decision of the Board of Appeal.

Both Board of Appeal decisions found for Adidas based on their enjoying a reputation in the mark. Pleas under likelihood of confusion were not examined. Shoe Branding raised a number of lines of attack against these decisions.

The most interesting of the attacks related to the possible impact of co-existence of the two marks and the previous use that had been made of the Applicant’s mark. The Applicant claimed that such co-existence could weaken the link made between the two marks in the eyes of the consumer. They also argued that such co-existence could give them due cause such that Article 8(5) did not apply. They also claimed that earlier use should be considered.

Although the General Court confirms that earlier use of the mark and co-existence can provide a “due cause” defence there are a number of criteria which must be met. These are:

The mark must have been used throughout the territory of the earlier mark (in this case the EU)

The use should not have been challenged by the proprietor of the earlier mark (co-existence must be “peaceful”)

The Applicant must have acted in good faith when using the mark

Failure to show these, or even some of these conditions, can result in a finding that there is a link between the marks and that there is no “due cause” defence.

On the facts of the case the Applicant failed to demonstrate any of the above three criteria and their attacks were therefore rejected. The appeals have therefore been upheld and Adidas continues to prevail. It remains to be seen whether a further trip to the CJEU is now on the cards.

This article is featured in boult.bites TM Summer 2018 edition. Click here to view the full newsletter.